Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “a rope- or ribbon- shaped pulling means” in claims 2, 10, 12, 15, 16 and 17.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 10 and 17 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
Regarding claim 10, the recitation “wherein the forefoot shell has a first shell portion on the inside of the foot and a second shell portion on the outside of the foot” (lines 3 - 5) has positively required the foot as part of the claimed invention. Therefore, making the claim encompassing a human organism.
Regarding claim 17, the recitation “wherein the forefoot shell has a first shell portion on the inside of the foot and a second shell portion on the outside of the foot” (lines 3 - 4) has positively required the foot as part of the claimed invention. Therefore, making the claim encompassing a human organism.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 - 17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1, 3, 4, 10, 14, 16 and 17, the phrases “in particular” have rendered the claims indefinite because it is unclear whether the limitation(s) following said phrases are required or set as example(s). Clarification is required. Claims 2, 5 - 9 and 11 - 13 and 15 depend from the claim 1 and therefore are also rejected under this section.
Further, with regards to claim 7, the recitation “and optionally” (lines 2 - 3) has rendered the claim indefinite because it is unclear whether the limitation following said recitation is required. Clarification is required.
Claim 12 recites the limitation "the tongue" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitation "the intermediate plate" in lines 2 - 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 14 recites the limitation "the second base part portion" in lines 2 - 3. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 - 3, 5 - 14, 16 and 17, as best understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chaigne, US 2015/0327622.
Regarding claim 1, Chaigne (US 2015/0327622) discloses a buckle (M2) [for a lacing device of a boot (1), in particular a ski boot (figure 1)], comprising a base part (a left part having R1 folding direction; figure 2) and a grip lug (a right part having R2 folding direction; figure 2), [wherein the base part can be placed with its underside (see figure 2) against a shell (2) of a boot and can be fastened to the shell], wherein the base part has at least one first receiving extension (18) on its upper side (figure 2), and wherein a swivel element (14) is configured on the grip lug (see figure 2), wherein in an engagement position the swivel element (14) is latched at least in certain regions in the first receiving extension (18) to form a swivelable first latching connection (see figures 4 and 5), so that the grip lug (right part) can be swiveled in the engagement position from an open engagement position (figure 4) into a closed engagement position (figure 5) by means of the swivel element (14), wherein at least one first latching extension (16) is configured on the upper side of the base part (figure 2), and wherein the grip lug is configured with at least one latching element (140) corresponding to the first latching extension (16; figure 2), wherein the first latching extension (16) and the latching element (140) are configured such that, in the closed engagement position (figure 5), the latching element (140) is latched at least in certain regions on the first latching extension (16) to form a releasable second latching connection, so that the grip lug is secured in the closed engagement position (figure 5) against leaving the engagement position and against swiveling into the open engagement position (figure 4).
Claim language set in brackets [] set forth above and below in this office action are considered by the examiner to be intended use that fails to further limit the structure of the claimed invention. Since the claimed invention is directed solely to that of the buckle, the prior art must only be capable of performing the functional recitations in order to be applicable, and in the instant case, the examiner maintains that the buckle tightening mechanism disclosed by Chaigne (US 2015/0327622), is indeed capable of the intended use statements. Note that it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations.
Regarding claim 2, Chaigne discloses the buckle according to claim 1, wherein the grip lug is configured with a lead-through (O14), the lead-through (O14) being arranged so as to extend at least substantially parallel to a swivel axis (relative to 140) of the swivel element (14), [and the lead-through (O14) being configured to receive and deflect a rope- or strap-shaped pulling means of a lacing device (10)].
Regarding claim 3, Chaigne discloses the buckle according to claim 2, wherein the lead-through (O14) is configured in the region of the swivel element (14), or in the swivel element (14), or in a sleeve in the swivel element, or wherein the lead-through (O14) is arranged in a distance to the swivel element, in particular in a sleeve.
Regarding claim 5, Chaigne discloses the buckle according to claim 1, wherein the latching element is configured as at least one aperture in the grip lug, or wherein the latching element (140) is configured as a bolt (see figure 2) in the grip lug.
Regarding claim 6, Chaigne discloses the buckle according to claim 1, wherein a second receiving extension (a first extending portion of 18) and a second latching extension (a second extending portion of 18) are configured on the upper side (see figure 3) of the base part (left part), the second receiving extension (the distal end portion of 18) and the first latching extension (16) being configured on the same extension (see figures 2 and 3).
Regarding claim 7, Chaigne discloses the buckle according to claim 6, wherein a tooth bar (defining notches 160 in between) is configured by the first latching extension (18) and the second latching extension (16) and optionally by further latching extensions.
Regarding claim 8, Chaigne discloses the buckle according to claim 1, wherein the base part (left part) is in one piece (figure 2) [and can be connected in a fixed position to a shell (2) of a boot (1)], wherein the at least one first receiving extension (18) and the at least one first latching extension (16) are integrally formed (when integrated) onto the base part (see figure 2), or wherein the base part is multi-part and has a first base part portion (see rivet element attached to the part portion) [which can be connected in a fixed position to a shell (2) of a boot (1), wherein the first base part portion (figure 2) is coupled via a further swivel element (200) to a second base part portion (see figure 2) [which can be placed against the shell (2) of a boot (1)], wherein the at least one first receiving extension (18) and the at least one first latching extension (16) are integrally formed onto the second base part portion (20).
Regarding claim 9, Chaigne discloses the buckle according to claim 1, wherein the buckle comprises an intermediate plate (20), wherein the intermediate plate (20) is arranged on the underside (see figure 2) of the base part (left part of the buckle) [and can be positioned between a shell (2) of a boot (1) and the base part], wherein the intermediate plate (20) has a tongue (see the rivet element in figure 2) projecting beyond the base part (figure 2), [wherein the tongue can be brought into direct contact with the shell (2)].
Regarding claim 10, Chaigne discloses a lacing device [for a boot, in particular for a ski boot], wherein the lacing device (12) can be attached to a shell (2) of a boot (1), wherein the shell (2) comprises a forefoot shell (a front portion of the boot 1) [for receiving a user's foot], and wherein the forefoot shell has a first shell portion (see element 4) on the inside of the foot and a second shell portion (see element 2b) on the outside of the foot, the lacing device (12) comprising at least one buckle (M2), a rope- or ribbon-shaped pulling means (10), and two anchoring points (see figure 1), wherein the pulling means (10) extends in a meandering manner starting from the anchoring points (having the keepers 12) and is arranged to pass through the at least one buckle (M2), wherein the at least one buckle (M2) is configured according to claim 1.
Regarding claim 11, Chaigne discloses the lacing device (12) according to claim 10, wherein three buckles (M2, 100, 102) are configured, wherein two buckles (100, 102) can be arranged on the first shell portion (4), and wherein the two anchoring points (where the keepers 12 are mounted) and the third buckle (M2) can be arranged on the second shell portion (see figure 1).
Regarding claim 12, Chaigne discloses the lacing device (12) according to claim 10, wherein the pulling means (10) is guided at least in some areas over the tongue (of 20) of the intermediate plate (20) and rests at least in some areas on the tongue (see figure 1), so that a force acting from the pulling means (10) on a shell (2) of a boot (1) is guided and distributed via the tongue (of the plate 20) onto the shell (1).
Regarding claim 13, Chaigne discloses the lacing device (12) according to claim 10, wherein the intermediate plate (20) is configured on a buckle (M2) arranged on the first shell portion (4), the tongue of the intermediate plate (20) extending to an outer edge or at least to a close region of the outer edge of the first shell portion (4).
Regarding claim 14, Chaigne discloses the lacing device (12) according to claim 10, wherein a buckle (M2) is attached to the second shell portion (having elements 2a, 2b), wherein the base part (left part), in particular the second base part portion (20), extends over an instep region up to the first shell portion (see figures 1 and 2).
Regarding claim 16, Chaigne discloses the lacing device (2) according to claim 10, wherein at least one of the anchoring points (30) is configured with an adjustable, in particular in a continuous manner, fine or superfine adjustment device, by means of which a length of the pulling means (18) can be varied.
Regarding claim 17, Chaigne discloses a boot (1), in particular a ski boot (sport boot), with a shell (2) comprising a forefoot shell (at the front of the boot; see figure 1) [for receiving a foot of a user], wherein the forefoot shell has a first shell portion (see element 2b in the figure 1) on the inside of the foot and a second shell portion (4) on the outside of the foot, wherein the first shell portion (2b) and the second shell portion (4) are spaced apart in an instep region (between said shell portions), or wherein the first shell portion is configured as an upper shell portion and the second shell portion is configured as a lower shell portion, and the first shell portion overlaps the second shell portion at least in certain areas in an instep region, starting from an inner boot edge in the direction of an outer boot edge, wherein the boot (1) is configured with at least one buckle (M2) according to claim 1 and/or wherein the boot is configured with a lacing device that can be attached to the shell of the boot, the lacing device comprising at least one buckle, a rope- or ribbon-shaped pulling means, and two anchoring points, wherein the pulling means extends in a meandering manner starting from the anchoring points and is arranged to pass through the at least one buckle.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 4 and 15, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Chaigne, US 2015/0327622.
Regarding claim 4, Chaigne discloses the buckle according to claim 2 except for wherein the lead-through (O14), or the swivel element (14) in the region of the lead-through, or the sleeve is formed from an electrically non-conductive material, in particular from plastic, and wherein the remaining part of the grip lug (right part) is formed from an electrically conductive material, in particular from aluminum.
It is known in the art to utilize plastic material as a substitute for metal, and vice versa, in the mechanical art since the technology of plastic components have matured in the industrial market and the mechanical properties of plastic have been improved to be as strong and advantageous as metallic components. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the swivel component formed of plastic (more flexible) and the grip lug formed of metal (sturdier), since it has been held to be within the general skill of a worker in the art to select a known (commercially available) material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 15, Chaigne discloses the lacing device (12) according to claim 10. Chaigne does not explicitly disclose wherein the rope- or ribbon-shaped pulling means (10) is formed from an electrically conductive material or has an electrically conductive surface. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have pulling means made of metal, since it has been held to be within the general skill of a worker in the art to select a known (commercially available) material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Further, the Examiner takes Official Notice that metal laces, cables, or wires used in footwear and sporting equipment are inherently electrically conductive and it is well known in the art that ski boots employ metal cables (or wires) as laces in place of textile laces due to the high tensile strength, durability and resistance to stretching of the metal lacing. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to recognize that the metal lace is electrically conductive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 for similar art cited.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROWLAND DO whose telephone number is (571)270-5737. The examiner can normally be reached Monday-Thursday 8:30 - 7:00 PT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason San can be reached at (571) 272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.D./ Examiner, Art Unit 3677
/JASON W SAN/ SPE, Art Unit 3677